SINGAPORE PATENTS – PURPOSIVE CLAIM CONSTRUCTION STILL THE RULE, UK ACTAVIS CASE DOES NOT APPLY

LEE TAT CHENG V MAKA GPS TECHNOLOGIES PTE LTD [2018] SGCA 18

On 13 March 2017, in the Singapore High Court case of Lee Tat Cheng v Maka GPS Technologies Pte Ltd [2017] SGHC 48, the High Court held patent no. 87795 for an “automotive accident recordal system and process” to be valid but not infringed by the defendant. The High Court also granted the defendant injunctive relief in respect of what was found to be the plaintiff’s groundless threats of infringement proceedings. The plaintiff (now appellant) appealed against the decision of the High Court and in particular, the findings of non-infringement, groundless threats and the said injunctive relief.

Having regard to the circumstances of the case, the Court of Appeal (“CA”) dismissed the appeal against the non-infringement finding but reversed the High Court’s grant of injunctive relief against groundless threats.

In reaching its decision, the CA considered whether the principles of claim construction and extent of protection afforded by a patent in the recent decision of the UK Supreme Court in Actavis UK Limited and others v Eli Lilly and Company [2017] UKSC 48 (“Actavis”) ought to be, as argued by the appellant, applied in Singapore.

Prior to Actavis, the “purposive approach” as developed in UK cases listed below had been routinely adopted in claim construction in Singapore:

-Catnic Components Limited and another v Hill & Smith Limited [1982] RPC 183

-Improver Corporation and others v Remington Consumer Products Limited and others [1990] FSR 181; and

-Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9

Under this approach, once claims have been so interpreted, the scope of protection conferred would be apparent and the issue of infringement would be decided on such basis.

The CA remarked that Actavis distinguished the interpretation of a claim in a patent from the extent of the protection afforded by that patent. This is a significant departure from the established position that the extent of the protection conferred under a claim is exactly what that claim, properly construed, encompasses. Actavis allowed for both the “normal”, purposive approach as well as an alternative, functional equivalent approach test for infringement. Giving detailed reasons, the CA ultimately decided not to apply Actavis in Singapore.

The CA also reversed the High Court’s finding that once a claim for groundless threat of infringement was made out, the Court was obliged to grant an injunction, if such relief had been sought. The CA held that the wording of the Patents Act, despite stating that the claimant shall (emphasis added), if he proved that threats were made and satisfied the Court that he was a person aggrieved by those threats, be entitled (emphasis added) to the relief, did not displace the Court’s discretion to determine whether or not to grant such relief.

In light of this decision, patentees would be well advised to take into account the possibility of functional equivalents when drafting patent specification. Claims should be carefully crafted to provide coverage since the Singapore Court will adhere strictly to only the purposive approach. As for alleged infringers threatened with infringement proceedings, in order to obtain injunctive relief, care should be taken to submit persuasive evidence that they have been “aggrieved” by such threats, for example the damage they have suffered or that the patentee intends to make further threats.

?–Gerald Koh–

The comments expressed herein are the writer’s own and do not represent that of Viering, Jentschura & Partner LLP